In the Trustee of Columbia University in the City of New York v, Symantec Corporation, [2015-1146] (February 2, 2016) the Federal Circuit affirmed the district court’s\u00a0claim construction order and subsequent partial final judgment of non-infringement and invalidity with respect to\u00a0U.S. Patent Nos. 7,487,544,\u00a07,979,907,\u00a07,448,084,\u00a07,913,306, but reversed the claim construction of U.S. Patent Nos. 8,074,115, and\u00a08,601,322, and remanded for further proceedings.<\/p>\n
At issue was the meaning of “byte sequence feature,” which the district court found was limited machine code instructions, but the patent owner argued included other information.\u00a0 The Federal Circuit first rejected the patent owner\u2019s argument that the presumption of plain and ordinary meaning can be overcome when\u00a0the patentee has expressly defined a term or\u00a0disavowed the full scope of the claim in the specification and the prosecution history, pointing out that terms can be defined, or scope disclaimed without an explicit statement, and that is what the Federal Circuit found.<\/p>\n
The Federal Circuit noted that twice in the specification, the patentee states that the \u201cbyte sequence feature\u201d is useful and informative \u201cbecause it represents the machine code in an executable.\u201d\u00a0These, according to the Federal Circuit, were\u00a0not simply descriptions of the preferred embodiment, but\u00a0statements defining \u201cbyte sequence feature.\u201d\u00a0 The Federal Circuit also relied upon a more explicit definition in the provisional application, pointing out that provisional applications incorporated by reference are \u201ceffectively part of the\u201d specification as though it was \u201cexplicitly contained therein.\u201d<\/p>\n
The patentee pointed to at least one instance in the specification where \u201cbyte sequence feature\u201d included more than machine code instructions, but the Federal Circuit\u00a0said that this single sentence in the specification cannot overcome the overwhelming evidence in other parts of the specification and the provisional application demonstrating that the intended definition of this term does not include information other than machine code instructions.<\/p>\n
Regarding the indefiniteness of the claims, the Federal Circuit noted that some of the claims \u00a0\u201cbyte sequence feature,\u201d which is a feature extracted from machine code instructions, with the extraction of \u201cresource information,\u201d which is not a machine code instruction.\u00a0 However rather than finding that this broadened the meaning of \u201cbyte sequence feature,\u201d\u00a0the Federal Circuit found that this was non-sensical, thus making the claims indefinite.<\/p>\n
Regarding the claim term \u201cprobabilistic model of normal computer system usage\u201d the Federal Circuit again found this term implicitly defined by consistent statements in the specification, the absence of\u00a0embodiments inconsistent with the implicit definition, and statements in the provisional application, which was incorporated by reference, and arguments made in the prosecution history to distinguish some prior art.\u00a0 The patent owner pointed to applications incorporated by reference, but the Federal Circuit said that fleeting references cannot overcome the overwhelming evidence in the specification and the prosecution history, especially given the specification did not \u201ceven refer with any detailed particularity\u201d to the passages\u00a0the patent owner\u00a0now argues support its construction.<\/p>\n
Lastly, with\u00a0regard\u00a0to the term “anomalous”\u00a0in the ‘115 and ‘322 patents.\u00a0 The Federal Circuit first observed that there was no reason why terms in the ”115 and ‘322\u00a0should be the same is the other patents in suit.\u00a0 Where multiple patents derive from the same parent application and share many common terms,\u00a0 one\u00a0must interpret the claims consistently across all asserted patents.\u00a0 However, the Federal Circuit noted that patents resulted from two separate families, and these two families of patents claim two different inventions, list only one inventor in common, were filed years apart, and do not result from the same patent application.\u00a0The Federal Circuit found affirmative reasons to construe the terms in the claims different, noting difference in the claims including claim differentiation,\u00a0 Finally the Federal Circuit noted that the description in the provisional application on which the patents were based supported the different construction.<\/p>\n","protected":false},"excerpt":{"rendered":"
In the Trustee of Columbia University in the City of New York v, Symantec Corporation, [2015-1146] (February 2, 2016) the Federal Circuit affirmed the district court’s\u00a0claim construction order and subsequent partial final judgment of non-infringement and invalidity with respect to\u00a0U.S. … Continue reading